E-TIPS

On March 29, 2021, the Canadian Intellectual Property Office (CIPO) launched a consultation on proposed changes to the refusal and review process for industrial design decisions. CIPO’s Discussion Paper states that the proposed changes will “make it easier to ensure consistency of final refusals” and would increase the timeliness of final decisions.

On March 13, 2021, the Government of Canada published the College of Patent Agents and Trademark Agents Regulations, Rules Amending the Patent Rules, and Regulations amending the Trademarks Regulations (collectively, the proposed Regulations) for public consultation. The proposed Regulations will implement the College of Patent Agents and Trademark Agents Act (the Act), which received royal assent in 2018, and transfer authority for agent regulation from the Canadian Intellectual Property Office (CIPO) to the College of Patent Agents and Trademark Agents (the College).

On March 4, 2021, the Federal Court of Appeal of Canada (FCA) issued its decision in Apotex Inc. v. Janssen Inc., 2021 FCA 45, further clarifying the test for obviousness to try in patent litigation proceedings.

On March 23, 2021, the UK Intellectual Property Office (IPO) announced the results of its open consultation on the impact of artificial intelligence (AI) on intellectual property (IP) policy covering patents, copyright, trademarks, designs and trade secrets. The consultation was carried out in late 2020, with a total of 92 responses received from numerous stakeholders, including IP attorneys, industry associations, tech sectors and other creative industries.

On March 15, 2021, YouTube announced the rollout of its new screening system, Checks, which automatically scans videos for potential copyright claims and ad-suitability issues prior to the video being published on the platform.

On March 11, 2021, a digital art piece in non-fungible-token form entitled “Everydays – The First 5000 Days” by digital artist Beeple was sold by Christie’s for a record 69.3 million USD in an online auction that garnered hundreds of bids over a two week period. The sale brought the rise of non-fungible token sales to global attention, as the digital art auction, the first of its kind held by Christie’s, not only set the record for the highest auction price for a digital work, but the third-highest price achieved for a living artist ever.

On March 4, 2021, the Supreme Court of Canada denied an application for leave to appeal brought forward by 3510395 Canada Inc. (Compufinder) for two Federal Court of Appeal decisions that unanimously upheld the constitutionality of Canada’s Anti-Spam Legislation (CASL). This dismissal of the application for leave ends a run of challenges brought forth by Compufinder claiming that the legislation is unconstitutional because it falls outside of Parliament’s legislative power and it violates sections 2(b), 7, 8 and 11 of the Canadian Charter of Rights and Freedom (the Charter).

On December 23, 2020, the federal government published significant amendments to the Food and Drug Regulations (FDR) and Medical Devices Regulations (MDR) in Canada Gazette, Part II. These amendments build on Bill C-17, Vanessa’s Law, which was passed in 2014 to improve Health Canada’s ability to obtain post-market safety information for therapeutic products.

On January 8, 2021, the Court of the Queen’s Bench of Alberta (the Court) in Setoguchi v Uber B.V., 2021 ABQB 18, denied certification under Alberta’s Class Proceedings Act of a proposed privacy breach class action on behalf of customers of Uber and its drivers (Class Members) whose personal information was subject to unauthorized access.

On February 15, 2021, the Federal Court of Appeal of Canada (FCA) issued its decision in Loblaws Inc. v Columbia Insurance Company, 2021 FCA 29, dismissing an appeal by Loblaws Inc. (Loblaws) from a decision of the Federal Court (FC) that held that the Columbia Insurance Company, The Pampered Chef, Ltd., and Pampered Chef – Canada Corp. (collectively, Pampered Chef) had not infringed Loblaws’ PC marks.

On February 25, 2021, the Federal Court of Canada (the Court) issued its decision in TBV Productions, LLC v Doe, 2021 FC 181, dismissing a motion by TBV Productions LLC (TBV) to pursue statutory damages against SaskTel, Bell, and Xplornet (the Internet Service Providers (ISPs)) for not fulfilling their notice obligations under the “notice-and-notice” regime set out in sections 41.25 and 41.26 of the Copyright Act.

On February 17, 2021, the Canadian Federal Court (the Court) issued its decision in Hidden Bench Vineyards & Winery Inc. v Locust Lane Estate Winery Corp., 2021 FC 156, in which it dismissed an application by Hidden Bench Vineyards & Winery Inc. (“Hidden Bench”) against Locust Lane Estate Winery Corp. (“LLEW”) for passing off in relation to the trademark LOCUST LANE for wines and related services.

On February 23, 2021, the Office of the Privacy Commissioner of Canada (OPC) released its submission to the Treasury Board of Canada Secretariat expressing views on the statutory review of the Access to Information Act (ATIA) governing the right to access records under the control of federal government institutions.

On December 11, 2020, the Canadian federal government awarded IBM Canada a $1.5 million contract for the development and testing of a virtual passport app (the platform) pursuant to the Immigration, Refugees and Citizenship Canada’s (IRCC) Passport Digital Services Project. The announcement generated concern among Canadian privacy experts, who fear that the platform may put users’ personal information at risk.

On February 22, 2021, Facebook Inc. (Facebook) announced that it would restore news access and sharing on its platform for Australians after it reached an agreement with the Australian government to amend the proposed News Media and Digital Platforms Mandatory Bargaining Code (the Code).

We continue to be asked about what is happening to Canadian trademark applications. This article updates an article we first published in the summer of 2020. There is some progress to report, but it is a story of a few steps forward and a few steps back.

On February 5, 2021, the Supreme Court of Canada (the SCC), in Wastech Services Ltd v Greater Vancouver Sewerage and Draining District (2021 SCC 7), held that contracting parties have a duty to exercise contractual discretion in good faith and that this duty “operates in every contract irrespective of the intentions of the parties”.

On February 11, 2021, the Government of Canada launched a consultation on how to implement an extended term of copyright protection in Canada in accordance with the Canada-United States-Mexico Agreement (CUSMA).

On February 3, 2021, the Office of the Privacy Commissioner of Canada (OPC) issued a statement following an investigation into American technology company Clearview AI and its use of facial recognition technology, as previously reported by the E-TIPS® Newsletter here.

On January 28, 2021, the Ontario Superior Court of Justice (the Court) issued its decision in Caplan v Atas, 2021 ONSC 670, where it recognized a new civil tort of harassment in internet communications.